UNITED STATES DISTRICT COURT - smcarthurlaw.com · Crescent Moon Trademark as shown on a sticker...
Transcript of UNITED STATES DISTRICT COURT - smcarthurlaw.com · Crescent Moon Trademark as shown on a sticker...
Stephen Charles McArthur (Bar No. 277712) [email protected] The McArthur Law Firm PC 10008 National Blvd. #295 Los Angeles, CA 90034 Telephone: (323) 639-4455 Facsimile: (855) 420-7032 Attorneys for Plaintiff BLACK MOON COSMETICS
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
BLACK MOON COSMETICS Plaintiff, vs. MANNY GUTIERREZ
d/b/a MANNY MUA;
JEFFREE STAR;
and
JEFFREE STAR COSMETICS Defendants.
Case: CV-17-2548 COMPLAINT FOR
1. Common Law Trademark Infringement
2. Copyright Infringement
3. Federal False Designation of Origin
4. California Statutory Unfair Competition
5. California Common Law Unfair Competition
6. Federal Trade Dress Infringement
Plaintiff, Black Moon Cosmetics (“Black Moon” or “Plaintiff”) by and
through its undersigned counsel, states as follows for this complaint against Manny
Gutierrez d/b/a Manny Mua (“Manny Mua”), Jeffree Star and Jeffree Star
Cosmetics (collectively, the “Jeffree Star Defendants”) (Jeffree Star Defendants
and Manny Mua collectively referred to as “Defendants”) and alleges as follows:
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 1 of 33 Page ID #:1
I. INTRODUCTION
1. This action arises out of Defendants’ intentional and willful business
decision to ignore Black Moon’s first use, trademark rights, and copyright in Black
Moon’s packaging for its cosmetic products.
2. Plaintiff Black Moon Cosmetics launched in 2015 as a mother-
daughter duo that manufactures and sells high quality, well-crafted cosmetic
products to consumers at https://www.blackmooncosmetics.com/ and
https://www.instagram.com/blackmooncosmetics/?hl=en.
3. Black Moon is known for their use of bold and eye-catching
packaging for their products.
4. Black Moon has grown organically to over 250,000 social media
followers and has been featured numerous times on outlets such as BuzzFeed,
Allure, and Top Knot.
5. One of Black Moon’s most successful packaging offerings, introduced
in June 2015, incorporates a mark consisting of a holographic crescent moon on a
black background, with “Black Moon” embossed in holographic types near the
crescent moon.
6. Black Moon was the first cosmetic company to use packaging
incorporating a mark consisting of holographic crescent moon on a black
background to distribute cosmetic products.
7. Defendant Manny Mua subsequently communicated with Black Moon
expressing a fondness for Black Moon’s packaging design.
8. Approximately four months after Black Moon first popularized the
use of the aforementioned packaging and mark, Manny Mua released his own
extremely similar product packaging incorporating a mark using a holographic
crescent moon on a black, starry background, with “Manny Mua” and “MUA”
embossed near the crescent moon.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 2 of 33 Page ID #:2
9. Despite his knowledge of Black Moon’s product and its superior
rights, Manny Mua continues to sell its infringing product to this day.
10. Additionally, in early 2017, Manny Mua and the Jeffree Star
Defendants entered into a collaboration to produce a product with packaging
incorporating a second infringing mark using a holographic crescent moon on a
black background that is substantially similar to and likely to cause confusion with
Black Moon’s trademarked and copyrighted designs.
11. Despite their knowledge of Black Moon’s substantially similar logo
and product packaging, Manny Mua and the Jeffree Star Defendants still plan to
sell its infringing product, which is scheduled for release on April 8, 2017.
12. Accordingly, due to Defendants’ blatant and willful infringement,
Black Moon has no choice but to file this lawsuit seeking damages that it has
suffered as a result of Defendants’ copyright and trademark infringement, as well
as a preliminary and permanent injunction.
II. JURISDICTION AND VENUE
13. This Court has subject matter jurisdiction over Black Moon’s Lanham
Act claims pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1367, and
1338(a).
14. This Court has supplemental jurisdiction over Black Moon’s pendent
state law claims pursuant to 28 U.S.C. § 1367 in that the state law claims are
integrally interrelated with Black Moon’s federal claims and arise from a common
nucleus of operative facts such that the administration of Black Moon’s state law
claims with its federal claims furthers the interest of judicial economy.
15. This Court has personal jurisdiction over all Defendants because all
Defendants are located in this District, do substantial business and sales in this
district, and advertises, distributes, offers for sale, and sells the infringing products
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 3 of 33 Page ID #:3
in this District. All Defendants have purposefully availed themselves and directed
their business at the opportunities of this District. All Defendants committed
tortious acts in this district against Plaintiff whose principle place of business is
located in this District.
16. Venue is proper in this District under 28 U.S.C. § 1391.
III. PARTIES
17. Plaintiff Black Moon Cosmetics is a California Corporation with an
address of 1812 Burbank Blvd, #513, Burbank, CA 91506.
18. Defendant Manny Mua is, upon information and belief, a California
resident with PO Box at 374 E. H St., STE A PMB 280, Chula Vista, CA, 91910-
7496.
19. Defendant Jeffree Star, aka Jeffrey Lynn Steininger, is, upon
information and belief, a California resident with an address of 9400 Lurline Ave.
Unit F, Chatsworth, CA 91311.
20. Defendant Jeffree Star Cosmetics is a California Limited Liability
Corporation with an address of 9400 Lurline Ave Unit F, Chatsworth, CA 91311.
IV. FACTS
A. Black Moon’s First Use of the Crescent Moon Trademarks
21. On June 20, 2015, Black Moon first began employing packaging
incorporating a mark consisting of a holographic crescent moon on a black
background for its cosmetic products (the “Crescent Moon Trademark”).
22. Black Moon designed the Crescent Moon Mark because it was unique
and visually striking.
23. On September 27, 2015, Black Moon’s products bearing the Crescent
Moon Trademark first went on sale.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 4 of 33 Page ID #:4
24. A holographic crescent moon on a black background quickly became
commonly associated by consumers as identifying Black Moon products.
25. Below is a true and correct copy of a photograph uploaded by Black
Moon to Facebook dated and timestamped June 20, 2015, showing a lipstick
product using the holographic Crescent Moon Trademark and Plaintiff’s trade
dress.
26. Below is a true and correct copy of a photograph uploaded by a
customer to Facebook on November 11, 2015, showing the Crescent Moon
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 5 of 33 Page ID #:5
Trademark being used in association with cosmetic products.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 6 of 33 Page ID #:6
27. Below is a true and correct copy of the long form Crescent Moon
Trademark.
28. Below is a true and correct copy of Black Moon’s abbreviated
Crescent Moon Trademark as shown on a sticker distributed by Plaintiff in October
2015 (the long form Crescent Moon Trademark and the abbreviated Crescent
Moon Trademark are hereinafter collectively referred to as the “Crescent Moon
Trademarks”).
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 7 of 33 Page ID #:7
29. The abbreviated Crescent Moon Trademark was first published by
Plaintiff on October 12, 2015, as seen in the top right-hand corner of the dated
Instagram screenshot below—long before Defendants started using a highly similar
mark to sell their own competing cosmetic products.
30. Plaintiff uses the two Crescent Moon Trademarks to advertise and sell
lipsticks and eyeshadows.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 8 of 33 Page ID #:8
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 9 of 33 Page ID #:9
31. Plaintiff has pending trademark applications for each of the Crescent
Moon Trademarks, serial numbers 87051343 and 87051398.
32. Plaintiff has also applied for copyright registrations for each of the
designs incorporated in the Crescent Moon Trademarks as well, copyright case
numbers 1-4649298781 and 1-4649298877.
B. Manny Mua’s Knew of Black Moon’s Trademarks and Packaging
33. Manny Mua had actual knowledge of Black Moon’s use of the
Crescent Moon Trademarks, products, and distinctive packaging at least by
September 2015.
34. In fact, on September 27, 2015, Manny Mua responded to a “direct
message” from Plaintiff over Instagram offered admiration and praise for Black
Moon’s abbreviated Crescent Moon Trademark design on a starry back
background and writing that he “absolutely loveeeeee[s] your packaging!”.
35. Below is a true and correct copy of a screenshot of a conversation
between Manny Mua and a Black Moon representative showing Manny Mua
offering praise for Black Moon’s packaging on September 27, 2015, several
months before Manny Mua debuted his packaging and trademark.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 10 of 33 Page ID #:10
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 11 of 33 Page ID #:11
C. Manny Mua Begins Selling Cosmetic Products Branded with a
Holographic Crescent Moon on a Black Background
36. Five months after Manny Mua learned of Black Moon’s unique and
distinctive packaging and trademarks, he began selling a competing eyeshadow
product using a packaging incorporating an extremely similar style and
trademark of a holographic crescent moon on a black background, referred to
hereafter as the “Manny MUA Infringing Mark”.
37. Below is a true and correct copy of a photograph uploaded to
Instagram on February 8, 2016, depicting the Manny MUA Infringing Mark.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 12 of 33 Page ID #:12
38. The Manny MUA Infringing Mark simply took the abbreviated
Crescent Moon Trademark on a black background and combined it with the
starry background that had been the feature of the Black Moon Cosmetics
website since its launch in February 2015:
https://www.blackmooncosmetics.com/.
39. Manny Mua’s willful use of and sale of competing eyeshadow
products using the Manny MUA Infringing Mark, despite knowledge that the
trademark was first used by Black Moon, is likely to create (and has already
created) confusion among the purchasing public as to the source of those goods.
40. For example, in Manny Mua’s Instagram post from June 2016
showing the Manny MUA Infringing Mark and packaging, a consumer with a
username quirabethdoll wrote “that packaging reminds me of
blackmoonconsmetics though.” 1
1 https://www.instagram.com/p/BGAuZ5VCfq2/?taken-by=mannymua733&hl=en
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 13 of 33 Page ID #:13
41. Manny Mua must now answer for infringing Black Moon’s
trademarks and copyrights, which will include an injunction barring all future
use of any and all products bearing the Manny MUA Infringing Mark, the
disgorgement of 100% of his profits to Black Moon, enhanced damages for
Manny Mua’s willful infringement, and actual damages to Black Moon for the
harm this has caused to its brand.
D. Defendants are About to Release a Second Infringing Logo
42. On or around March 2017, the Defendants announced a collaboration
which would result in a cosmetic product to be released on April 8, 2017.
43. Defendants’ collaborative product would incorporate a holographic
crescent moon logo on a black background (hereinafter, the “Star Collaboration
Infringing Logo”) that is extremely similar to Black Moon’s preexisting
abbreviated Crescent Moon Trademark.
44. Defendants chose their highly similar mark despite at least one
collaborator, Manny Mua, having knowledge that an extremely similar
trademark was already being used by Plaintiff Black Moon in association with
competing lipstick and face powder cosmetic products.
45. Below is a side-by-side comparison of packaging bearing Defendants’
Star Collaboration Infringing Logo on the left, and Plaintiff’s abbreviated
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 14 of 33 Page ID #:14
Crescent Moon Trademark, copyright, and trade dress on the right.
46. The Defendants’ willful use and sale of the Star Collaboration
Infringing Logo, is likely to create confusion among the purchasing public, and
indeed has already begun creating confusion among the purchasing public in
this District and elsewhere.
E. Consumer Confusion For Collaboration Packaging
47. Since Defendants released their infringing product, hundreds of
unaffiliated consumers have commented on both Defendants’ and Plaintiff’s
social media accounts expressing confusion between the logos, noting that the
Star Collaboration Infringing Logo clearly copied Black Moon’s Crescent
Trademarks and trade dress, and inquiring as to whether there is a collaboration
between Defendants and Plaintiff.
48. For example, Manny MUA announced the product bearing the Star
Collaboration Infringing Logo in a series of Instagram and Facebook posts. A
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 15 of 33 Page ID #:15
true and correct copy of a screenshot of one such representative post is below.
49. Numerous of Manny Mua’s followers, who are not affiliated with
Plaintiff, went out of their way to express their confusion as to whether
Defendants were collaborating with Black Moon or whether Defendants had
simply stolen Black Moon’s logo and design.
50. While many of those comments have already been deleted by
Defendants, a representative example of some of the remaining comments
demonstrating consumer confusion from Manny Mua’s social media are copied
below and are also attached as Exhibit A.
• “Kinda looks like #blackmooncosmetics” by shiori_dono, located at
https://www.instagram.com/p/BR16e4vggK5/?hl=en , Exhibit A, page 1
• “Damn I thought this was a @blackmooncosmetics review” by theonlyrosequartz,
located at https://www.instagram.com/p/BR16e4vggK5/ , Exhibit A, page 2
• “Ok but why does this look like you guys just ripped off @blackmooncosmetics
lmao” by cruxcorvus, located at https://www.instagram.com/p/BR16e4vggK5/ ,
Exhibit A, page 3
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 16 of 33 Page ID #:16
• “Ur a thief!! Way to steal @blackmooncosmetics logo!” by sarahhhh.leigh, located at
https://www.instagram.com/p/BRj5AWfgBW3/ , Exhibit A, page 4
• “Yaaas. Keep copying black moon cosmetics. Totally slaying in the creative
department” by adalwolff, located at https://www.instagram.com/p/BRj5AWfgBW3/
, Exhibit A, page 5
• “I thought of @blackmooncosmetics when I saw the moon because it looks exactly
like blackmoon’s interesting” by little.goth_princess, located at
https://www.instagram.com/p/BRj5AWfgBW3/ , Exhibit A, page 6
• “Looks like from Blackmooncosmetics !!” by leadrianalove, located at
https://www.instagram.com/p/BRj5AWfgBW3/ , Exhibit A, page 7
• “Why is it so similar to @blackmooncosmetics logo?” by merthiaellabeauty, located
at https://www.instagram.com/p/BRj5AWfgBW3/ , Exhibit A, page 8
• “So excited but you should at least use a different logo because it looks like Black
Moon’s worried you’ll get in trouble.” By primeandpose, located at
https://www.instagram.com/p/BRj5AWfgBW3/ , Exhibit A, page 9
• “Wen u wanna be @blackmooncosmetics so bad” by sarahhhh.leigh, located at
https://www.instagram.com/p/BSB456pgtxD/ , Exhibit A,
page 10
• “@mannymua733 love the colab and cant wait but can all make a video addressing
the drama of your packaging looking like a copy of Blackmoon cosmetics box? I
mean the ate just SO similar….” by gingerpristavec, located at
https://www.instagram.com/p/BSB456pgtxD/, Exhibit A, page 11
• “You guys are lowkey ripping off @blackmooncosmetics packaging but okay” by
haileeeyyyyy, located at https://www.instagram.com/p/BSB456pgtxD/ , Exhibit A,
page 12
51. Separately, the Jeffree Star Defendants announced the same Star
Collaboration Infringing Logo on their own social media, including on their
Instagram and Facebook accounts. A true and correct copy of a screenshot of
one such representative post is below.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 17 of 33 Page ID #:17
52. Numerous of the Jeffree Star Defendants followers, who are not
affiliated with Plaintiff, also went out of their way to express their confusion as
to whether Defendants were collaborating with Black Moon or whether
Defendants had simply stolen Black Moon’s logo and design.
53. A representative example of some of those undeleted comments
demonstrating consumer confusion are copied below and are also attached as
Exhibit A.
• “i love the copied black moon cosmetics logo” by revengewhore, located at
https://www.instagram.com/p/BR3u39OAwE4/ , Exhibit A, page 13
• “I thought this was Black Moon Cosmetics oops” by k0rnyy, located at
https://www.instagram.com/p/BR3u39OAwE4/ , Exhibit A, page 14
• “Looks like black moon cosmetics packaging…” by anjelica_of_house_ayers, located
at https://www.instagram.com/p/BR3u39OAwE4/ , Exhibit A, page 15
• “Why does this look so much like Black Moon Cosmetics ?????” by rebelgirrrl_,
located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 16
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 18 of 33 Page ID #:18
• “@rebelgirrrl_ dude. You are absolutely right. I went and look at black moon
cosmetics and yep. I wonder if it’s a copycat tactic” by cute_palestinian_arab, located
at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 16
• “Y’all getting sued by Blackmoon Cosmetics tho” by babydoll.madi, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 17
• “Looks like Black Moon Cosmetics palette so much” by yaelyup, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 18
• “Damn this is exactly like the Black Moon logo” by ilsondevries, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 19
• “Looks a lot like Black Moon Cosmetics’ logo” by isabella_calcagno, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 20
• “You copied Black Moon Cosmetics” by alfhkm, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 21
• “@blackmooncosmetics has had the holographic moon logo and black packaging
WAY before” by _megaturtle, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 22
• “I hope @blackmooncosmetics sues this rat” by miadosin, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 22
• “Lmaoooo they deadass stole the logo for their chalky ass new eyeshadow palette” by
ossuaryboy, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page
22
• “@cherryceren74 lmao still a Fucking rip off sis learn your brands
@blackmooncosmetics has had the holographic moon logo waaay before many” by
_megaturtle, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A,
page 23
• “Have you seen their packaging though? They could have done the collab in pink or
not used the holographic font so it would look just a little less like bmc logo and
packagain though” by officertwek, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 23
• “Ur a bully n a thief! Hope @blackmooncosmetics sues u n u get eat u deserve for
stealing from indie brands. Unoriginal” by sarahhhh.leigh, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 24
• “Seriously, I thought this was a collab with @blackmooncosmetics when I first saw
it. Not cool to rip off of smaller brands labels, logos, and packaging” by officertwerk,
located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 24
• “@crucifucked with you 100%. I thought this was a collab with bmc first. The test for
trademark infringement is consumer confusion! There ya go. They have a good case
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 19 of 33 Page ID #:19
in my opinion” by officertwerk, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 24
• “Packaging is a total knockoff of @blackmooncosmetics” by _megaturtle, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 25
• “I think it looks like bmc then that’s my opinion ….” by crucifucked, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 26
• “I really hope @blackmooncosmetics sues u. Ur a thief and bully deleting comments”
by sarahhhh.leigh, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit
A, page 27 [demonstrating not only a destruction of evidence by Defendants, but that
what we have identified here is only the tip of the iceberg].
• “@mygodangel yes … the same as @blackmooncosmetics #ripoff” by crucifucked,
located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 28
• “Dude I love this brand …. But why did you do the same logo as
@blackmooncosmetics ???” by crucifucked, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 28
• “@crucifucked oh trueeeeeeee I see where they got the inspiration from. But it still
looks good” by mygodangel, located at https://www.instagram.com/p/BRjpzt9AEsd/
, Exhibit A, page 28
• “@blackmagiccosmetics packaging looks familiar lol” by b.deezie, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 28
• “I’d buy it if manny’s name wasn’t on it. tbh that packaging looks beautiful but many
probably made it like that to be petty towards black moon cosmetics #fake” by
mandatorysuicide, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit
A, page 29
• “Looks exactly like the Black Moon Cosmetics logo ?? Not cool dude” by
natalie.rose____, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A,
page 30
• “I thought this was a @blackmooncosmetics box at first glance” by
timetravelingdandy, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit
A, page 30
• “This is kinda a rip off of Black Moon Cosmetics. Yes, it’s pretty, but it’s been done
before for years” by unexplained_gore, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 31
• “It reminds me of black moon cosmetics packaging, which I love so that’s good: by
thewicked1_26, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A,
page 32 [indicating an unfair market advantage Defendants are gaining from the
infringing use of Black Moon’s Crescent Moon Trademarks].
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 20 of 33 Page ID #:20
• “I thought this was @blackmooncosmetics for a few seconds” by macabremonster,
located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 33
• “This looks so similar to the @blackmooncosmetics logo! I love the holographic
everything” by odorky, located at https://www.instagram.com/p/BRjpzt9AEsd/ ,
Exhibit A, page 34
• “The crescent moon reminds me of @blackmooncosmetics as their logo is very
similar to that on this video, it looks almost exactly like their video as its on their
liquid lipsticks, and on the box/vault that liquid eye” by little.goth_princess, located
at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 35
• “packaging looks like @blackmooncosmetics” by _pentagrandma, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 36
• “This looks a lot like @blackmooncosmetics packaging?” by kmackup, located at
https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 37
• “Thought I was looking at @blackmooncosmetics … same shiny crescent moon.
Hmm” by imdoingitwrong, located at https://www.instagram.com/p/BRjpzt9AEsd/ ,
Exhibit A, page 38
• “Looks like @blackmooncosmetics holographic logo thought it was them for a
min…” by glitteredsloth, located at https://www.instagram.com/p/BRjpzt9AEsd/ ,
Exhibit A, page 39
• “Packing reminds me of @blackmooncosmetics. I love both lines of cosmetics!” by
lovesus4eva, located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A,
page 40
• “Why does this look so much like @blackmooncosmetics” by xdragonsbreath,
located at https://www.instagram.com/p/BRjpzt9AEsd/ , Exhibit A, page 41
• “I got excited cuz i thought it was Black Moon cosmetics…. damn” by Kaz ‘Freddy’
Moore, located at
https://www.facebook.com/JeffreeStar/photos/a.10150451011370589.411753.616142
40588/10154800247000589/?type=3&theater , Exhibit A, page 42
• “I love jeffree and many but I would just like to know if anyone sees the similarities?
Maybe its just coincidence? Im really confused because I thought this was a really
original idea for packaging until someone sent this to me” by Kayla Marie Webb,
accompanied by a photograph of Black Moon Cosmetics’ logo, located at
https://www.facebook.com/JeffreeStar/photos/a.10150451011370589.411753.616142
40588/10154780589050589/?type=3&theater, Exhibit A, page 43
• “I’m not trying to hate but doesn’t this look a lot like another makeup set from Black
Moon Cosmetics?” by Meg Cunningham, accompanied by a photograph of Black
Moon Cosmetics’ logo, located at
https://www.facebook.com/JeffreeStar/photos/a.10150451011370589.411753.616142
40588/10154780589050589/?type=3&theater, Exhibit A, page 44
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 21 of 33 Page ID #:21
• “I really look forward to this…but doesn’t the packaging look similar to Black Moon
Cosmetics?” by Luna Nyz, located at
https://www.facebook.com/JeffreeStar/photos/a.10150451011370589.411753.616142
40588/10154780589050589/?type=3&theater, Exhibit A, page 45
54. While it is not practical here to include every comment from
consumers expressing confusion between Plaintiff’s Crescent Moon
Trademarks and Defendants’ Star Collaboration Infringing Logo, we have
quoted a few more below.
• “[Am] I the only one that thinks that this packaging and jeffree stars/many mua’s
packaging looks similar”? A comment with over 900 likes and dozens of people
responding with agreement on @buzzfeedtopknot’s Facebook page dated March 13,
20172, user Victoria McCourt.
• “I had to do a double take when I saw Manny’s packaging this morning on IG
because I thought they looked WAY too similar.” Id.
• “I literally thought this was many mua and heffree stars collan I was like whoooa
what!!!!” Id, Vicki Michaud.
• “WOOOWWW, does this not look like the jeffree star and many packaging?????” Id,
Hailey Marie
• “Jeffree and many mua collab makeup packaging looks exactly like this.” Id, Nina
Watson.
55. To this day, Defendants continue to use Black Moon’s trademarks and
copyrights in association with products soon to be on sale, despite knowledge of
Black Moon’s first use of those trademarks and copyrights.
56. Defendants must now answer for their infringing conduct, which will
include an injunction barring all future use of any and all products bearing the
Star Collaboration Infringing Logo, the disgorgement of 100% of Defendants’
profits to Black Moon, enhanced damages for Manny Mua’s willful
2 https://www.facebook.com/buzzfeedtopknot/ (this is a promotional post from BuzzFeed about Black Moon
Cosmetics that devolved into a debate about two competitors, which damages Black Moon’s brand and promotional
opportunities).
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 22 of 33 Page ID #:22
infringement, and actual damages to Black Moon for the harm this has caused
to its brand.
CLAIM I
(Manny MUA Infringing Mark: Common Law Trademark Infringement)
57. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
58. Manny Mua has caused a likelihood of confusion among the
purchasing public in this District and elsewhere, thereby infringing Black
Moon Cosmetics’ common law trademark rights in its Crescent Moon
Trademarks.
59. Black Moon Cosmetics is being irreparably injured. Such irreparable
injury will continue unless Manny Mua is preliminarily and permanently
enjoined by this Court from further violations of Black Moon Cosmetics’
rights.
CLAIM II
(Star Collaboration Infringing Logo: Common Law Trademark
Infringement)
60. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
61. Manny Mua and Jeffree Star Defendants have caused a likelihood of
confusion among the purchasing public in this District and elsewhere, thereby
infringing Black Moon Cosmetics’ common law trademark rights in its
Crescent Moon Trademarks.
62. Black Moon Cosmetics is being irreparably injured. Such irreparable
injury will continue unless Manny Mua and Jeffree Star Defendants are
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 23 of 33 Page ID #:23
preliminarily and permanently enjoined by this Court from further violations of
Black Moon Cosmetics’ rights.
CLAIM III
(Manny MUA Infringing Mark: Federal Copyright Infringement)
63. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
64. This Count arises under the Copyright Act of 1976, Title 17 United
States Code §101 et seq.
65. Black Moon’s abbreviated and long form crescent moon on a black
background are wholly original, creative works that constitute copyrightable
subject matter under the Copyright Act, 17 U.S.C. § 101 et seq. Plaintiff Black
Moon Cosmetics owns the exclusive rights and privileges in and to the crescent
moon designs, and in compliance with the law has filed for federal copyright
registration, case numbers 1-4649298781 and 1-4649298877. At all relevant
times, Black Moon Cosmetics has owned all applicable rights, titles, and
interest in and to the copyrighted works.
66. Manny Mua intentionally copied, displayed, and used the copyrighted
works and works substantially similar to them in the Manny MUA Infringing
Mark.
CLAIM IV
(Star Collaboration Infringing Logo: Federal Copyright Infringement)
67. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
68. This Count arises under the Copyright Act of 1976, Title 17 United
States Code §101 et seq.
69. Black Moon’s abbreviated and long form crescent moon on a black
background are wholly original, creative works that constitute copyrightable
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 24 of 33 Page ID #:24
subject matter under the Copyright Act, 17 U.S.C. § 101 et seq. Plaintiff Black
Moon Cosmetics owns the exclusive rights and privileges in and to the crescent
moon designs, and in compliance with the law has filed for federal copyright
registration, case numbers 1-4649298781 and 1-4649298877. At all relevant
times, Black Moon Cosmetics has owned all applicable rights, titles, and
interest in and to the copyrighted works.
70. Defendants intentionally copied, displayed, and used the copyrighted
works and works substantially similar to them in the Star Collaboration
Infringing Logo packaging.
CLAIM V
(Manny MUA Infringing Mark: False Designation of Origin Under 15 U.S.C.
§ 1125(a))
71. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
72. Manny Mua’s use of an infringing logo has resulted in and continues
to result in confusion, mistake, and deception among consumers as to the source
of origin of Black Moon’s and Manny Mua’s products and services.
73. Manny Mua was aware at least as early as September 2015 of Black
Moon’s prior rights to the holographic crescent moon on a black background.
74. By having actual and constructive knowledge of Black Moon’s rights
and trademarks and continuing to use an infringing logo, Manny Mua has,
without consent of Black Moon, willfully violated 15 U.S.C. § 1125(a).
75. Manny Mua has done and is doing so with the intent to unfairly
complete against Black Moon, to trade upon Black Moon’s reputation and
goodwill by causing confusion and mistake among consumers and the public,
and to deceive the public into believing that Manny Mua’s products are
associated with, sponsored by, or approved by Black Moon, when they are not.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 25 of 33 Page ID #:25
76. Manny Mua’s aforementioned acts and statements have caused
damages to Black Moon in an amount to be proven at trial.
77. Black Moon is also being irreparably injured. Such irreparable injury
will continue unless Manny Mua is permanently enjoined by this Court from
further violation of Black Moon’s rights, for which Black Moon has no
adequate remedy at law.
CLAIM VI
(Star Collaboration Infringing Logo: False Designation of Origin Under 15
U.S.C. § 1125(a))
78. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
79. Defendants’ use of the Star Collaboration Infringing Logo has
resulted in and continues to result in confusion, mistake, and deception among
consumers as to the source of origin of Black Moon’s and the Defendants’
products and services.
80. Defendants were aware at least as early as September 2015 of Black
Moon’s prior rights to the Crescent Moon Trademarks.
81. By having actual and constructive knowledge of Black Moon’s rights
and trademarks and continuing to use an infringing logo, Defendants have,
without consent of Black Moon, willfully violated 15 U.S.C. § 1125(a).
82. Defendants have done and are doing so with the intent to unfairly
complete against Black Moon, to trade upon Black Moon’s reputation and
goodwill by causing confusion and mistake among consumers and the public,
and to deceive the public into believing that the Defendants’ products are
associated with, sponsored by, or approved by Black Moon, when they are not.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 26 of 33 Page ID #:26
83. Defendants’ aforementioned acts and statements have caused damages
to Black Moon in an amount to be proven at trial.
84. Black Moon is also being irreparably injured. Such irreparable injury
will continue unless Defendants are permanently enjoined by this Court from
further violation of Black Moon’s rights, for which Black Moon has no
adequate remedy at law.
CLAIM VII
(Manny MUA Infringing Mark: California Statutory Unfair Competition
§ 17200)
85. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
86. By virtue of the acts complained of herein, Manny Mua has
intentionally caused a likelihood of confusion among consumers and the public
and has unfairly competed with Plaintiff in violation of Cal. Bus. & Prof. Code
§ 17200, et seq.
87. Manny Mua’s acts constitute unlawful, unfair, malicious or fraudulent
business practices, which have injured and damaged Black Moon.
88. As a direct and proximate result of Manny Mua’s acts, Black Moon
will suffer great harm in an amount to be determined at trial. Black Moon has
also been irreparably injured. Black Moon will continue to be irreparably
damaged unless Manny Mua is enjoined from further committing unfair and
unlawful business practices against Black Moon.
CLAIM VIII
(Star Collaboration Infringing Logo: California Statutory Unfair Competition
§ 17200)
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 27 of 33 Page ID #:27
89. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
90. By virtue of the acts complained of herein, Defendants have
intentionally caused a likelihood of confusion among consumers and the public
and has unfairly competed with Plaintiff in violation of Cal. Bus. & Prof. Code
§ 17200, et seq.
91. Defendants’ acts constitute unlawful, unfair, malicious or fraudulent
business practices, which have injured and damaged Black Moon.
92. As a direct and proximate result of the Defendants’ acts, Black Moon
will suffer great harm in an amount to be determined at trial. Black Moon has
also been irreparably injured. Black Moon will continue to be irreparably
damaged unless Manny Mua and Jeffree Star Defendants are enjoined from
further committing unfair and unlawful business practices against Black Moon.
CLAIM IX
(Manny MUA Infringing Mark: California Common Law Unfair
Competition)
93. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
94. Manny Mua has caused a likelihood of confusion among the
purchasing public in this District and elsewhere, thereby infringing Black
Moon’s trademark rights, in violation of the common law of the State of
California.
95. Black Moon is being irreparably injured. Such irreparable injury will
continue unless Manny Mua is permanently enjoined by this Court from further
violations of Black Moon’s rights.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 28 of 33 Page ID #:28
CLAIM X
(Star Collaboration Infringing Logo: California Common Law Unfair
Competition)
96. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
97. Defendants have caused a likelihood of confusion among the
purchasing public in this District and elsewhere, thereby infringing Black
Moon’s trademark rights, in violation of the common law of the State of
California.
98. Black Moon is being irreparably injured. Such irreparable injury will
continue unless the Defendants are permanently enjoined by this Court from
further violations of Black Moon’s rights.
CLAIM XI
(Manny MUA: Federal Trade Dress Infringement Under
15 U.S.C. § 1125(a))
99. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
100. Plaintiff’s trade dress, as shown in Section IV. A above, including a
black box with a holographic crescent moon and the company name inside of or
adjacent to the crescent moon (the “Black Moon Trade Dress”) is nonfunctional
and distinctive.
101. Manny Mua’s packaging used together with the Manny MUA
Infringing Mark is nonfunctional, used without Plaintiff’s permission, is likely
to result in confusion, mistake, and deception among consumers as to the source
of Manny Mua’s products and services. The trade and consuming public are
likely to believe that Manny Mua’s products and services originate from Black
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 29 of 33 Page ID #:29
Moon or from the same source as products sold under the Black Moon Trade
Dress, or that there is some connection between the makers of Black Moon’s
products and Manny Mua’s products, when such is not the case.
102. Manny Mua was aware at least as early as November 2015 of Black
Moon’s prior rights to the holographic crescent moon on a black background.
103. By having actual and constructive knowledge of Black Moon’s rights
and trademarks and continuing to use infringing trade dress, Manny Mua has
willfully violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
104. As a direct and proximate cause of Manny Mua’s unlawful conduct,
Black Moon has suffered, and will continue to suffer unless and until such
activity is enjoined by this Court, irreparable damage and inherently
unquantifiable injury and harm to its business, reputation, and customer
goodwill.
105. Manny Mua’s conduct is causing and is likely to continue to cause
injury to the public and to Black Moon, and Black Moon is entitled to
injunctive relief and to recover Black Moon’s actual damages, costs, and/or an
award of Manny Mua’s profits.
CLAIM XII
(Star Collaboration Infringing Logo: Federal Trade Dress Infringement
Under 15 U.S.C. § 1125(a))
106. Black Moon Cosmetics incorporates by reference the allegations in
the preceding paragraphs of this Complaint.
107. Plaintiff’s trade dress as shown in Section IV. A above including a
black box with a holographic crescent moon and the company name inside of or
adjacent to the crescent moon (the “Black Moon Trade Dress”) is nonfunctional
and distinctive.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 30 of 33 Page ID #:30
108. Defendants’ packaging used together with its Star Collaboration Logo
is nonfunctional, used without Plaintiff’s permission, is likely to result in
confusion, mistake, and deception among consumers as to the source of
Defendants’ products and services. The trade and consuming public are likely
to believe that Defendants’ products and services originate from Black Moon or
from the same source as products sold under the Black Moon Trade Dress, or
that there is some connection between the makers of Black Moon’s products
and Defendants’ products, when such is not the case.
109. Manny Mua was aware at least as early as November 2015 of Black
Moon’s prior rights to the holographic crescent moon on a black background.
110. By having actual and constructive knowledge of Black Moon’s rights
and trademarks and continuing to use infringing trade dress, Defendants have
willfully violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
111. As a direct and proximate cause of Manny Mua’s unlawful conduct,
Black Moon has suffered, and will continue to suffer unless and until such
activity is enjoined by this Court, irreparable damage and inherently
unquantifiable injury and harm to its business, reputation, and customer
goodwill.
112. Defendants’ conduct is causing and is likely to continue to cause
injury to the public and to Black Moon, and Black Moon is entitled to
injunctive relief and to recover Black Moon’s actual damages, costs, and/or an
award of Defendants’ profits.
PRAYER FOR RELIEF
WHEREFORE, Black Moon Cosmetics demands a judgment against Manny
Mua and the Jeffree Star Defendants and prays that this Court Grants:
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 31 of 33 Page ID #:31
a. Preliminary and permanent injunctive relief against all Defendants and
their parents, subsidiaries, affiliated companies, and their respective
officers, directors, employees, and agents from using Plaintiff’s
trademarks, copyrights or trade dress, and any trademarks or copyrights
likely to cause confusion with the Black Moon Cosmetics’ trademarks,
and selling any of the products bearing similar trademarks or images.
b. An accounting of, and disgorgement of, any and all profits derived by the
Defendants and all damages sustained by Black Moon Cosmetics,
trebled, by virtue of the Defendants’ infringing and illegal acts, in an
amount to be determined at trial;
c. Prejudgment interest, the costs of this action, witness fees, and Black
Moon Cosmetics’ attorneys’ fees, pursuant to 15 U.S.C. § 1117, 1118,
and California Civil Code § 3288;
d. Punitive, enhanced, and exemplary damages for the Defendants’ acts of
unfair competition and willful infringement;
e. Other economic and consequential damages in an amount to be
determined at trial;
f. The destruction of all materials bearing infringements of Black Moon
Cosmetic’s trademarks;
g. That the Defendants be held jointly and severally liable;
h. A judgment that Defendants have unfairly competed with Black Moon
Cosmetics and violated the trademark laws of California and the United
States;
i. Grant to Black Moon Cosmetics such further relief as may be equitable
and proper.
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 32 of 33 Page ID #:32
Respectfully submitted,
By: /s/ Stephen McArthur
Stephen Charles McArthur
The McArthur Law Firm PC
10008 National Blvd., #295
Los Angeles, CA 90034
(323) 639-4455
Attorneys for Plaintiffs
Black Moon Cosmetics
Dated: April 3, 2017
DEMAND FOR JURY TRIAL
Plaintiff hereby demands a jury trial pursuant to Rule 38 of the Federal
Rules of Civil Procedure as to all issues in this lawsuit.
By: /s/ Stephen McArthur
Stephen Charles McArthur
The McArthur Law Firm PC
Attorneys for Plaintiff
Black Moon Cosmetics
10008 National Blvd., #295
Los Angeles, CA 90034
(323) 639-4455
Dated: April 3, 2017
Case 2:17-cv-02548 Document 1 Filed 04/03/17 Page 33 of 33 Page ID #:33